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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Alberto-Culver Company v. Jose Rodriguez

Case No. D2006-0841

 

1. The Parties

The Complainant is Alberto-Culver Company, Melrose Park, Illinois, United States of America, represented by Roberts, Mlotkowski & Hobbes, P.C., United States of America.

The Respondent is Jose Rodriguez, Secaucus, New Jersey, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name, <mynexxus.com>, is registered with Melbourne IT trading as Internet Names Worldwide.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2006. On July 3, 2006, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On July 4, 2006, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 7, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2006. The Response was filed with the Center on July 25, 2006.

The Center appointed Dennis A. Foster as the sole panelist in this matter on August 10, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

As part of its business, the Complainant owns a well-known line of hair care products that is sold worldwide under the trademark “NEXXUS.” Those products have been marketed since at least 1985, and the trademark is registered in the United States and in many foreign countries (e. g., United States Trademark Registration No. 2345345 dated April 25, 2000, in International Class 003 for hair care products, Complaint Annex C).

The Respondent registered the disputed domain name <mynexxus.com> on June 22, 2006. The web site found at the disputed domain name offers only links to other web sites.

 

5. Parties’ Contentions

A. Complainant

The Complainant recently purchased the “NEXXUS” brand hair care line, originated as early as 1985, for $46.5 million plus conditional payments of up to $55 million over the next ten years. Products under this brand are now sold in large retail stores throughout the United States, the Respondent’s domicile, as well as in other countries.

The Complainant owns many trademark registrations for the mark “NEXXUS” throughout the world, including a first United States registration in 1985. The Complainant also owns the domain name <nexxus.com>. Thus, the Respondent had at least constructive notice of the Complainant’s rights in the mark.

The Complainant has spent considerable amounts of money, time and effort in securing, developing, promoting, advertising and protecting its world-famous “NEXXUS” marks. As a result of the Complainant’s extensive advertising and promotion, the public associates the “NEXXUS” mark with the reputable goods provided by the Complainant.

The Complainant routinely monitors for impermissible uses of its marks, and has authorized cease and desist letters to companies and individuals who are wrongfully using any “NEXXUS” mark.

The disputed domain name is virtually identical to the Complainant’s mark. The addition of “my” in the name does not lessen, but increases, the confusion with that mark.

The Respondent is not using the disputed domain name in connection with a bona fide offering of goods, or making a legitimate noncommercial or fair use of it.

The Respondent has registered the disputed domain name intending to either: (1) profit from the sale of the name by selling it to the Complainant; (2) profit from the sale of the name by selling it to a competitor of Complainant so that the competitor could divert sales; (3) develop the Respondent’s own web site(s) using the Complainant’s trademarks, with the intent to divert customers away from the Complainant, cause confusion in the marketplace, or otherwise trade on the goodwill and name of the Complainant; and/or (4) prevent the Complainant from registering the domain name for its own use in its business. Thus, the Respondent has no rights in the disputed domain name and has registered it in bad faith.

The only “content” on the web site found at the disputed domain name is an attempt to redirect traffic to other web sites, not a bona fide offering of goods or services. Such web sites allow domain name registrants to profit from their illicit activity with virtually no effort by collecting “click through” or similar fees. By linking to competitive web sites, the Respondent is illicitly profiting from the goodwill associated with the Complainant’s mark as well as actively diverting the Complainant’s potential customers to the sites of others.

Neither known in any way as “Nexxus” nor operating under a similar trade name, the Respondent registered and is using the disputed domain name with full knowledge that such activities infringe upon the Complainant’s trademark and constitutes cybersquatting.

The Respondent’s web site is “blacklisted” as a site associated with spamming. Thus, the Respondent may be using the goodwill attached to the Complainant’s mark to send people unsolicited e-mail.

B. Respondent

The Respondent registered the disputed domain name intending it for personal use as a conduit for the expression of amateur poetry and writing.

The disputed domain name is related in no way to the products of the Complainant, but refers instead to a utopian place depicted in a motion picture.

The Respondent has not started work on a web site connected with the disputed domain name pending the outcome of this proceeding.

 

6. Discussion and Findings

In accordance with Paragraphs 4(a)(i), (ii) and (iii) of the Policy, the Complainant may succeed in this administrative proceeding and obtain ownership of the disputed domain name, <mynexxus.com>, by proving the following:

- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- the disputed domain name was registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Complainant has supplied the Panel with clear evidence that it owns many valid United States and foreign trademark registrations for the mark, “Nexxus.” The Panel is also aware that hair care products have been distributed under that mark for numerous years in the United States and elsewhere in the world. Thus, the Complainant’s rights in that mark are beyond question.

The disputed domain name differs from the Complainant’s trademark most notably by the addition of the word “my” before the full mark. As noted in the Complaint, prior panels operating within the scope of the Policy have found that the addition of this word to a mark tends only to focus attention on that mark, thereby creating even more confusion for an Internet user. See Sony Kabushiki Kaisha also trading as Sony Corporation v. Sin, Eonmok, WIPO Case No. D2000-1007, where the Panel wrote: “The addition of the letters ‘my’ has the effect of focusing the reader’s attention on the Complainant’s trademark. Accordingly, the Panel considers that a reader of the domain name would be confused into thinking that the domain name is associated with the Complainant.” See also Ferrero S.p.A. v. Mr. Jean-Francois Legendre, WIPO Case No. D2000-1534; and Robert Bosch GmbH v. Gurol Yardimci, WIPO Case No. D2005-0147. In line with the reasoning of those panels, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s mark.

Therefore, the Panel rules that the Complainant has carried its burden of demonstrating that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Under the Policy, the Complainant must establish that the Respondent has no rights or legitimate interests in the disputed domain name. However, it has become well-established in prior Policy cases that, due to the difficulty in proving a negative, once a complainant, through evidence and assertions, has made a prima facie case with regard to this issue, the burden shifts to the Respondent to rebut that case. See e.g., Coriolis Telecom v. The Corilis Group, Inc., NAF Case No. FA146624; and Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Here, the Complainant has furnished conclusive evidence of its restrictive rights in a trademark that is nearly identical to the disputed domain name, and indicates reasonably that it has in no way authorized the Respondent to utilize that trademark on behalf of either itself or the Complainant. Thus, a prima facie case is made, and the Respondent must produce convincing evidence to rebut it.

In subparagraphs 4(c)(i), (ii) and (iii), the Policy suggests three ways in which the Respondent may demonstrate its rights and/or legitimate interests in the disputed domain name. In this case, the Respondent’s sole assertion addressing this issue – that the Respondent intends to use the disputed domain name for personal poetry and writings – could possibly satisfy only the criteria cited in subparagraph 4(c)(iii), i.e., that the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. However, that language allows not for the mere intention for non-commercial or fair use of the domain name, but only for actual use in that manner. The current use of the disputed domain name, as displayed in evidence supplied by the Complainant (see Annex F), is to redirect Internet visitors to other web sites – a use, by the way, that does not qualify as a “bona fide offering of goods or services” per subparagraph 4(c)(i) of the Policy (See e.g., Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430. In this proceeding, the Panel cannot rely simply on unsupported claims of future intentions to conclude that the Respondent will put a domain name to legitimate non-commercial or fair use. As a result, the Panel determines that the Respondent has failed to satisfy any of the criteria listed in Paragraph 4(c) of the Policy.

Based on the reasoning above, the Panel rules that the Complainant has shown satisfactorily that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

In this case, the Complainant has provided the Panel with evidence (see Annex F) that, despite the Respondent’s contention that the disputed domain name will be used for noncommercial personal use, the web site currently found at that name simply re-directs Internet users to web sites owned and controlled by third parties. The Complainant asserts that prior Policy panels have decided that such conduct constitutes sufficient evidence to sustain a finding of bad faith registration and use under the Policy. The Panel has examined such cases and finds itself in agreement with the Complainant. For example, in Phillip Morris Incorporated v. r9net, WIPO Case No. D2003-0004 , the panel, ruling in favor of the complainant, considered evidence similar to that presented in this case and concluded, among other things, that, “Clearly, the disputed domain name is being used intentionally to attract users to these other sites, and this is evidence of bad faith.” See also, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489. The Panel finds it consistent to apply the same reasoning to the instant case.

Accordingly, the Panel determines that the Respondent has registered and is using the disputed domain name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <mynexxus.com>, be transferred to the Complainant.

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Dennis A. Foster
Sole Panelist

Dated: August 24, 2006